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   Terminal Disclaimer
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Mark McCormick
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Terminal Disclaimer
« on: Apr 19th, 2005, 12:31pm »
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I would appreciate some advice on the following scenario:
Have filed a patent application and it is rejected on the grounds of double patenting.
Only some of the claims are actually at fault here.
 
Can you file a terminal disclaimer for some of the claims in a patent but not for other claims?
 
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Wiscagent
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Re: Terminal Disclaimer
« Reply #1 on: Apr 19th, 2005, 12:57pm »
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A terminal disclaimer can be used to avoid an obviousness-type double patenting rejection.  The disclaimer must include all claims of the rejected application even if only one claim is subject to the double patenting rejection.  
 
       from the PRG Patent Bar Prep Course
 
See CFR 1.321(b) and (c).
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Richard Tanzer
Patent Agent
JimIvey
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  jamesdivey  
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Re: Terminal Disclaimer
« Reply #2 on: Apr 26th, 2005, 9:18pm »
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Thanks, Richard, for the precise authority.  I believe you can split the case into two applications (cancel some claims and file them as a continuation).  However, I doubt that will result in a net gain of patent term given the pendency of continuation applications.  In short, it's feasible to do, but probably not practical.
 
Regards.
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James D. Ivey
Law Offices of James D. Ivey
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JS
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Re: Terminal Disclaimer
« Reply #3 on: Nov 20th, 2007, 4:28pm »
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terminal disclaimer issue with a twist:
 
Company A and Company B are co-assignees on patent 1 and patent 2.  As co-assignees, they both have rights to 100% of the invention.  Patent 2 has a terminal disclaimer based on the expiration date of patent 1.
 
Normally with a terminal disclaimer, if the assignee re-assigns one of the patents, but not the other, then the other patent would not be enforceable.  However, how does this play out if you have co-assignees?  If company A re-assigned patent 2, would this render patent 1 unenforceable, even though there is still a common owner, company B?
 
Any thoughts, references, case law, etc would be appreciated.
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Isaac
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Re: Terminal Disclaimer
« Reply #4 on: Nov 20th, 2007, 5:11pm »
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on Nov 20th, 2007, 4:28pm, JS wrote:
Any thoughts, references, case law, etc would be appreciated.

 
I'm not sure of the exact mechanics, but I really don't see any problem in principle with a terminal disclaimer in this situation.   When two entities co-own a patent, it takes the cooperation of both parties to sue on the patent, so a terminal disclaimer restricting the ownership to two companies would not seem to create the problem where some poor infringer gets sued repeatedly by different owning entities.
 
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Isaac
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